Ex Parte Lyons

Board of Patent Appeals and Interferences

Jul 31, 2007

10646720 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOSEPH H. LYONS
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Appeal 2007-1570
Application 10/646,720
Technology Center 2800
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Decided: July 31, 2007
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 19-25 and 39-52. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing on this appeal was conducted on July 10,
2007.
We AFFIRM.
Appeal 2007-1570
Application 10/646,720

THE INVENTION
The disclosed invention relates generally to an apparatus and method
for detecting very small distances, and, more particularly, to proximity
sensing with gas flow (Specification 1).
Independent claims 19, 39, and 46 are illustrative:
19. A method, comprising:

using first and second probes each having a respective
elongated nozzle;

scanning the first probe over a reference surface to produce
successive reference values, such that a size of an opening of the
elongated nozzle allows for an entire area of the reference surface
adjacent the first probe during the scanning to be measured by
substantially eliminating low sensitivity areas;

scanning the second probe over a measured surface to produce
successive measured values, such that a size of an opening of the
elongated nozzle allows for an entire area of the measured surface
adjacent the second probe during the scanning to be measured by
substantially eliminating low sensitivity areas; and

determining a topography of the measured surface based on a
difference between respective ones of the successive measured values
and respective ones of the successive reference values.

39. A system, comprising:

means for directing a gas stream into a reference channel and a
measurement channel;

means for evenly restricting gas flow through the reference
channel and the measurement channel;

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probes located at adjacent ends of the reference channel and the
measurement channel and having an elongated nozzle orifice; and

means for sensing a mass of gas flow between the reference
channel and the measurement channel.

46. A gas gauge proximity sensor that is provided with a gas supply
during operation, comprising:

a dividing portion that divides the supplied gas into a reference
channel and a measurement channel;

flow restrictors placed in the reference channel and
measurement channel;

probes respectively coupled to adjacent ends of the reference
channel and the measurement channel, the probes including elongated
nozzle orifices; and

a mass flow sensor coupled between the reference and
measurement channels that senses the mass of gas flow therebetween.

THE REFERENCES
Applicant’s Admitted Prior Art (APPA), “Background of the
Invention,” (Specification 1-3).

Zumbach US 3,948,082 Apr. 6, 1976
Carreras US 4,604,892 Aug. 12, 1986
Barada US 4,953,388 Sep. 4, 1990
Nemeth US 5,317,898 Jun. 7, 1994

THE REJECTIONS
Claims 19-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Barada in view of Carraras.
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Claims 39-52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Barada in view of Carraras.
Claims 19-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Barada in view of Zumbach.
Claims 39-52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Barada in view of Zumbach.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Barada in view of Carraras, and further in
view of Nemeth.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Barada in view of Zumbach, and further
in view of Nemeth.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for the respective details
thereof.
Motivation
Appellant argues there is no motivation to combine Barada with
Carraras or Zumbach because: (1) Carraras and Zumbach are non analogous
art to the claimed invention, (2) the Examiner has relied upon impermissible
hindsight, (3) the applied references do not solve the same problem
presented by the inventor, and (4), the combinations proffered by the
Examiner would make Barada unsatisfactory for its intended purpose and/or
change Barada’s principle of operation (Br. 15-20). Appellant concludes the
Examiner has failed to establish a prima facie case of obviousness (Br. 20).

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Regarding Appellant’s first argument that Carraras and Zumbach are
non analogous art to the claimed invention, we note that in KSR Int’l Co. v.
Teleflex Inc., the Supreme Court recently stated:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill
[emphasis added].

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d
1385, 1396 (2007).
Here, we agree with the Examiner that the expanded coverage area of
the variant elongated or rectangular nozzles of Carraras and Zumbach would
have been recognized by a person of ordinary skill in the art as an
improvement over the conventional nozzle orifices taught by Barada, given
the limited surface area covered by Barada’s conventional nozzle orifice.1
With respect to the issue of hindsight, in KSR the U.S. Supreme Court
reaffirmed that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex

1 Carraras teaches that jets 6 and 7 each have rectangular (i.e., elongated)
sections (col. 4, ll. 57-58). Zumbach teaches an elongated nozzle (col. 8, ll.
49-51, i.e., sensing slit 34 extending longitudinally in air gap 31.
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post reasoning.” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. See also
Graham v. John Deere Co., 383 U.S. 1, 36, 148 USPQ 459, 474 (1966).
Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 127 S. Ct. at 1742-43, 82 USPQ2d at 1397.
Here, we do not agree with Appellant’s assertion that the Examiner
has impermissibly relied upon hindsight in formulating the rejection. After
carefully considering all of the evidence before us, we find the Examiner has
pointed to specific portions of Carraras, Zumback, and Nemeth, respectively,
as providing motivation that reasonably supports the legal conclusion of
obviousness (see Answer 4, 5, and 6).
Regarding Appellant’s third argument that the applied references do
not solve the same problem presented by the inventor, we note the Supreme
Court stated in KSR that any need or problem known in the field and
addressed by the patent can provide a reason for combining the elements in
the manner claimed, as follows:
The flaws in the Federal Circuit's analysis relate mostly to its
narrow conception of the obviousness inquiry consequent in its
application of the TSM test. The Circuit first erred in holding
that courts and patent examiners should look only to the
problem the patentee was trying to solve. Under the correct
analysis, any need or problem known in the field and addressed
by the patent can provide a reason for combining the elements
in the manner claimed [emphasis added].

KSR, 127 S. Ct. at 1732, 82 USPQ2d at 1389-90.

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We further disagree with Appellant’s fourth argument that the
combinations proffered by the Examiner would make Barada unsatisfactory
for its intended purpose and/or change Barada’s principle of operation. In
particular, we note that the Examiner has merely relied on Carraras and
Zumbach for their respective teachings and/or suggestions of elongated or
rectangular nozzles (see Answer 3-5; see also footnote 1 supra). We find
the Examiner’s proffered combinations would have enhanced Barada by
providing additional measurement capabilities (e.g., over a surface area or
topology).
Thus, when we take account of the inferences and creative steps that a
person of ordinary skill in the art would have employed, we conclude the
Examiner has articulated an adequate reasoning with a rational underpinning
that reasonably supports the legal conclusion of obviousness.

Independent claim 19 (elements)
We consider the Examiner’s rejection of independent claim 19 as
being unpatentable over Barada in view of Carraras as well as the
Examiner’s rejection of claim 19 as being unpatentable over Barada in view
of Zumbach.
Appellant merely asserts the following language of claim 19 is not
taught nor suggested by the applied references:
scanning the first probe over a reference surface to produce
successive reference values, such that a size of an opening of the
elongated nozzle allows for an entire area of the reference surface
adjacent the first probe during the scanning to be measured by
substantially eliminating low sensitivity areas;

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scanning the second probe over a measured surface to produce
successive measured values, such that a size of an opening of the
elongated nozzle allows for an entire area of the measured surface
adjacent the second probe during the scanning to be measured by
substantially eliminating low sensitivity areas;

(Br. 13-14; see also claim 19).

In response, we find Appellant has failed to comply with the
requirements of 37 C.F.R. § 1.111(b) by merely reciting the language of the
claim and asserting that such language is not taught by the reference(s). We
further note that a statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Nevertheless, we agree with the Examiner
that the cited references teach and/or suggest the argued claim limitations.
Regarding eliminating low sensitivity areas, we note the Examiner has
pointed out that Appellant discloses this advantage flows from either
matching the orifice footprint to the surface features or to the elongated
dimensions of the nozzles (Answer 3; Specification ¶¶ 48, 23). We note that
Carraras teaches a jet (i.e., an orifice) having a shape homothetic to that of
the deposit to be measured (col. 4, ll. 6-8). Carraras specifically teaches jets
6 and 7 each have rectangular (i.e., elongated) sections (col. 4, ll. 57-58). We
further note that Zumbach teaches an elongated nozzle (col. 8, ll. 49-51, i.e.,
“sensing slit 34 extending longitudinally in the air gap 31, this sensing
aperture being connected to a differential pressure meter as shown at 72 in
FIGS. 7 and 8.”). We find that successively scanning a measurement surface
to cover an entire area (i.e., a topology) is merely a predictable variation
well within the level of knowledge of a person of ordinary skill. We have
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fully addressed the issue of motivation supra. Therefore, we do not find
Appellant’s argument persuasive, and we find that Appellant has not shown
error in the Examiner’s prima facie case of obviousness. Accordingly, we
sustain the Examiner’s rejection of independent claim 19 as being
unpatentable over Barada in view of Carraras and also as being unpatentable
over Barada in view of Zumback for essentially the same reasons set forth in
the Answer (see Answer 3-5).

Dependent claims 20-24
We further note that Appellant has not presented any substantive
arguments directed separately to the patentability of dependent claims
20-24. In the absence of a separate argument with respect to the dependent
claims, those claims stand or fall with the representative independent claim.
See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). See also 37 C.F.R. § 41.37(c)(1)(vii)(2004). Therefore, we will
sustain the Examiner’s rejection of claims 20-24 as being unpatentable over
Barada in view of Carraras and also as being unpatentable over Barada in
view of Zumbach for the same reasons discussed supra with respect to
independent claim 19.

Independent claims 39 and 46 (elements)
We consider next the Examiner’s rejection of independent claims 39
and 46 as being unpatentable over Barada in view of Carraras as well as the
Examiner’s rejection of claim 39 and 46 as being unpatentable over Barada
in view of Zumbach.
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Appellant asserts that none of the applied references teach or suggest
the following limitations of claims 39 and 46, respectively:
probes located at adjacent ends of the reference channel and the
measurement channel and having an elongated nozzle orifice;
(claim 39).

probes respectively coupled to adjacent ends of the reference
channel and the measurement channel, the probes including elongated
nozzle orifices;
(claim 46).

We again find Appellant has failed to comply with the requirements
of 37 C.F.R. § 1.111(b) by merely reciting the language of the claim and
asserting that such language is not taught by the reference. Nevertheless, we
find Barada teaches probes located at (i.e., respectively coupled to) adjacent
ends of the reference channel and the measurement channel, as claimed. See
Barada, Fig. 1, reference probe 60 and measurement probe 58. We further
agree with the Examiner that Carraras and Zumbach each teaches and/or
suggests a rectangular or elongated nozzle orifice as set forth in the rejection
and discussed supra (see Answer 3-5; see also footnote 1 supra). We have
fully addressed the issue of motivation supra. We again note that a statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, we do not find Appellant’s argument
persuasive, and we find that Appellant has not shown error in the
Examiner’s prima facie case of obviousness. Accordingly, we sustain the
Examiner’s rejection of independent claims 39 and 46 as being unpatentable
over Barada in view of Carraras and also as being unpatentable over Barada
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in view of Zumbach for the same reasons set forth in the Examiner’s
rejections (see Answer 3-5).

Dependent claims 40-45 and 47-52
We note that Appellant has not presented any substantive arguments
directed separately to the patentability of dependent claims 40-45 and 47-52.
In the absence of a separate argument with respect to the dependent claims,
those claims stand or fall with the representative independent claim.
See In re Young, 927 F.2d at 590, 18 USPQ2d at 1091. See also 37 C.F.R.
§ 41.37(c)(1)(vii)(2004). Therefore, we will sustain the Examiner’s
rejection of these claims as being unpatentable over Barada in view of
Carraras and also as being unpatentable over Barada in view of Zumbach
for the same reasons discussed supra with respect to independent claims 39
and 46.

Dependent claim 25
Lastly, we consider the Examiner’s rejection of dependent claim 25 as
being unpatentable over Barada in view of Carraras and Nemeth as well as
the Examiner’s rejection of claim 25 as being unpatentable over Barada in
view of Zumbach and Nemeth.
Appellant argues that Nemeth does not remedy the deficiencies of
Barada, Carraras, and Zumbach, taken alone or in combination (Br. 20). We
find no deficiencies with Barada, Carraras, and Zumbach, as discussed
supra. Therefore, we conclude the Examiner has met the burden of
presenting a prima facie case of obviousness with respect to dependent claim
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25. Accordingly, we will sustain the Examiner’s rejection of dependent
claim 25 as being unpatentable over Barada in view of Carraras and Nemeth
and also as being unpatentable over Barada in view of Zumbach and Nemeth
for the same reasons set forth in the Answer (see Answer 5-7).

DECISION
We have sustained the Examiner’s rejection of all claims on appeal.
Therefore, the decision of the Examiner rejecting claims 19-25 and 39-52 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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